WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Perfetti Van Melle Benelux BV v. Jesse Lebiwotz Case No. D2008-1383 1. The Parties
The Complainant is Perfetti Van Melle Benelux BV, Breda, The Netherlands, represented by Perfetti Van Melle S.p.A., Milano, Italy.
The Respondent is Jesse Lebiwotz, Lake Worth, Florida, United States of America, represented by the Law office of Brian D. Buckstein, P.A., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2008. On September 12, 2008, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the domain name at issue. On September 15, 2008, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details but disclosing that the disputed domain name was registered with 1&1 Internet AG which differed from the name of the registrar in the Complaint. On September 18, 2008, the Center sent an email communication to the Complainant providing the name of the Registrar as disclosed by the latter and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 18, 2008 amending the name of the Registrar in the Complaint to be 1&1 Internet AG. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraph 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, advised that the proceedings commenced on September 22, 2008 and further advised that in accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2008.
There intervened correspondence between the parties, beginning with an electronic communication sent to the Center on September 22, 2008 by Jesse A. Leibowitz who stated that he was only 15 years old, that someone recently stole his identity and used his name to get the disputed domain name, and that he wanted to sign the disputed domain name over to the Center at no charge. This was followed by another communication in which Jesse A. Leibowitz said he and his father did not know what was going on. The Center forwarded this correspondence to the Complainant indicating the latter may wish to consider the possibility of a suspension of the proceedings to explore a settlement between the parties. The Center also advised the said Jesse A. Leibowitz that any communication by a party should be copied to the other party. On September 23, 2008 the Complainant wrote to Jesse Leibowitz suggesting a settlement and on October 10, 2008, the Respondent's representative wrote to the Complainant stating it had been retained to represent the Respondent but had not succeeded in reaching the Complainant, and requesting a 20 day extension of time to respond to the Complaint or resolve the matter.
On October 14, 2008, the Complainant requested the suspension of the administrative proceedings until November 13, 2008, in order to give time to the Respondent's representative to investigate the matter of the disputed domain name registration. On October 15, 2008 the Center suspended the administrative proceedings until November 13, 2008.
Further communications were attempted between the Complainant and the Respondent but it appears that these did not result in settlement of the matter.
On November 11, 2008, the Complainant requested re-institution of the administrative proceedings. On November 13, 2008, the Center re-instituted the proceedings. As noted above the due date for Response was October 12, 2008, which was prior to the suspension of the administrative proceedings. The Respondent did not submit any Response, and the Center proceeded to appoint the Panel.
The Center appointed Joan Clark as the sole panelist in this matter on November 27, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
According to the Registrar 1&1 Internet AG, the disputed domain name was created on April 13, 2008, and is due to expire on April 13, 2009 and the registrant of the disputed domain name is Jesse Lebiwotz, the Respondent herein.
The Complainant declares it is the owner of many trademark registrations and applications for MENTOS as a word with or without device, covering mainly products of international class 30 and used in particular on candies and chewing gum. The first international trademark registration for MENTOS dates back to 1966 while, in the United States of America, MENTOS has been a registered trademark since 1972.
The Complainant has provided copies of several MENTOS registration certificates, as well as a list of the Complainant's trademark registrations and applications for MENTOS around the world. 5. Parties' Contentions A. Complainant
(a) Allegation that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant avers that it is the owner of many trademark registrations and applications for MENTOS word and/or device covering mainly products of international class 30 and used in particular on candies and chewing gum. The first international trademark registration for MENTOS dates back to 1966 while, in the United States of America which is the home country of the Respondent, MENTOS has been a registered trademark since 1972.
The Complainant states that MENTOS has been used on candies in the Netherlands since the 1950's and that nowadays MENTOS products are widely advertised and sold successfully all around the world. The total net sales of MENTOS products in 2007 amounted to USD 519,670,000 and the advertising expenses to USD 53,701,000.
The Complainant further states that, in the United States of America, MENTOS net sales for 2007 amounted to USD 60,016,000.
The Complainant asserts that the disputed domain name is not only confusingly similar but is almost identical to the Complainant's registered trademark MENTOS, and that only two letters (“ms”) had been added at the end of the first dominating and most relevant part (“Mentos”) of the disputed domain name.
(b) Allegation that the Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant asserts that the Respondent has not been commonly known by the disputed domain name and that, to the Complainant's knowledge, the Respondent has no rights based upon tradition or legitimate prior use of the name.
The Complainant further states that, bearing in mind that MENTOS is a famous brand in the United States of America, it seems quite strange that the choice for the name of the disputed domain name fell on a word so strictly similar to MENTOS, unless the Respondent's aim were to attempt to exploit the fame of the Complainant's MENTOS products without incurring advertising or promotional costs.
(c) Allegation that the disputed domain name was registered and is being used in bad faith
The Complainant avers that it never received any information about the existence of the Respondent and never had any connection, affiliation or commercial relationship with the Respondent, and that the Respondent never approached the Complainant to request consent to registration of the disputed domain name.
The Complainant states that, due to the strict similarity between the words “mentosms” and “mentos”, consumers may think there is a link between the Complainant's products and the Respondent's disputed domain name, which resolves to a parking web-page offering several links to different websites.
The Complainant asserts that the Respondent intentionally attempts to attract Internet users expecting to reach the website corresponding to the Complainant's products, to divert them to another variety of services by creating a likelihood of confusion with the Complainant's trademark.
The Complainant further avers that the Respondent could not be unaware of this risk when he chose to register his domain name, and that being a resident of the United States of America, he should have been aware of the existence of the Complainant's products “Mentos”. B. Respondent
The Respondent did not submit a formal Response to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has satisfied the Panel that the Complainant is the owner of, and has rights in, numerous trademark registrations for the trademark MENTOS covering in particular candies and chewing gum, and further, that the first international trademark registration for MENTOS dates back to 1966, while in the United States of America it has been a registered trademark since 1972.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant's trademark MENTOS, and that the two letters “ms” added at the end of the Complainant's trademark do not obviate confusion, as the principal part of the disputed domain name which would attract the attention of Internet users is, in fact, the same as the Complainant's trademark. As has been held in numerous UDRP decisions, the addition of a top level domain such as “.com” should not be considered in determining the identical or confusingly similar character of the domain name.
The first criterion of the Policy has therefore been satisfied by the Complainant. B. Rights or Legitimate Interests
The Respondent did not file a formal Response, and there is no evidence in the record before the Panel of any situation which would indicate the Respondent has rights or legitimate interests in the disputed domain name, such as an indication that the Respondent had been commonly known by the disputed domain name, or had made a legitimate non commercial or fair use of it, or had made bona fide preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Further, the Complainant asserts that it never had any connection, affiliation or commercial relationship with the Respondent and accordingly the Panel concludes that the Respondent was not licensed or authorized by the Complainant to use the latter's trademark in the Respondent's domain name.
It has been held in a number of UDRP decisions that, while the overall burden of proof is on the Complainant, this element of proving that the Respondent has no rights or legitimate interests in the disputed domain name involves the Complainant in proving matters which are particularly within the knowledge of the Respondent, that is, of proving a negative, which is often an impossible task for the Complainant. When the latter has made prima facie plausible allegations with some facts in support, the Respondent has a case to answer. See Valero Energy Corporation, Valero Refining and Marketing Company v. Web Advertising Corp, WIPO Case No. D2008-0407, and the decisions there cited.
The informal correspondence in the case file from Jesse Liebowitz indicates that the latter did not want the disputed domain name and indeed had not applied to register it. In any event, there is nothing before the Panel to establish that the Respondent (“Jesse Lebiwotz”) has rights or legitimate interests in the disputed domain name.
In light of the evidence before it, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The second criterion of the Policy has been satisfied by the Complainant. C. Registered and Used in Bad Faith
In view of the substantial sales under the Complainant's MENTOS trademark, especially in the United States of America where the Respondent is located, it is unlikely that the party applying to register the disputed domain name would have been unaware of the existence of the Complainant's trademark.
Whatever the particular motive for registering the disputed domain name may have been, the Panel is of the view that it was to take advantage of the existence of a well-known mark. No formal Response was filed to justify the Respondent's independent choice of the domain name involving as its prominent part the word and mark MENTOS, and there has been no refutation of the Complainant's allegation of bad faith registration.
The Panel notes that the 15 year old writer to the Center, who objected to the registration of the disputed domain name and said his identity had been stolen, gives a physical address and an email address which are the same as those in the WHOIS database of the registrar for the registrant. However the name of the young writer is Jesse Liebowitz, whereas the name of the registrant in the WHOIS database is Jesse Lebiwotz. As no Response has been filed, there has been no explanation by the Respondent of the use of the name Jesse Lebiwotz with the same physical and email addresses as claimed by Jesse Liebowitz.
Accordingly, the Panel concludes that the disputed domain name was registered in bad faith.
The elements that caused the Panel to conclude that the disputed domain name was registered in bad faith continue to exist and apply to the Respondent's continuing use of the disputed domain name, which the Panel finds relies upon the reputation and widespread use of the Complainant's mark MENTOS with which it is confusing. The Complainant has produced a parking web page under the disputed domain name offering several links to different websites. The Respondent's use of the disputed domain name confusingly similar to the Complainant's trademark is likely to divert Internet users, attracted to the Complainant's mark, to other web sites.
The Panel finds that the disputed domain name in dispute has been registered and is being used in bad faith, and the third criterion of the Policy has been satisfied by the Complainant. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Joan Clark
Sole Panelist
Dated: December 11, 2008
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